January 2018

01/30/2018

What do barbecue sauce, wine and law firms have in common? Each frequently find themselves at the center of legal disputes over the right to use and/or register one’s family name (or “surname”) as a trademark.[1] Indeed, our region is no stranger to this controversial issue. See The Taylor Wine Company, Inc., v. Bully Hill Vineyards, Inc., 590 F.2d 701 (2d Cir. 1978)(injunction granted which prohibited defendant, Walter S. Taylor, from using the Taylor family name as a trademark and placed restrictions of how his signature could be used on wine labels).

Trademark infringement suits over surnames typically stem from two situations: (1) disputes over the use of a family name by a “junior user,” in particular where the original trademark has acquired considerable good will;[2] or (2) common surnames which are being used by two different companies with similar profiles.[3]